Ex Parte Burkhart et alDownload PDFBoard of Patent Appeals and InterferencesSep 22, 201011246581 (B.P.A.I. Sep. 22, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P Alexandria, 0 Box 1450 Virginia 22313- 1450 www uspto gov 34533 7590 09/24/20 10 INTERNATIONAL CORP (BLF) C/O BIGGERS & OHANIAN, LLP P.O. BOX 1469 AUSTIN, TX 78767-1469 APPLICATION NO. EXAMINER KAMAL, SHAHID 111246,581 1010712005 Michael J. Burkhart AUS920050440US 1 6997 FILING DATE I ARTUNIT I PAPERNUMBER I FIRST NAMED INVENTOR Please find below andlor attached an Office communication concerning this application or proceeding. NOTIFICATION DATE The time period for reply, if any, is set in the attached communication. ATTORNEY DOCKET NO. DELIVERY MODE Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): CONFIRMATION NO. 09/24/2010 ELECTRONIC office @biggerslaw.com jennifer @biggerslaw.com michelle @biggerslaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte MICHAEL J . BURKHART, DANIEL C. EISENHAUER, DANIEL M. SCHUMACHER, and THOMAS J. WATSON Appeal 2009-008220 Application 1 1/246,58 1 Technology Center 3600 Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. FETTING, Administrative Patent Judges. LORIN, Administrative Patent Judge. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE" (paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-008220 Application 1 1/246,58 1 STATEMENT OF THE CASE Michael J. Burkhart, et al. (Appellants) seek our review under 35 U.S.C. 5 134 of the final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. 5 6(b) (2002). SUMMARY OF DECISION We REVERSE and enter a NEW GROUND OF REJECTION, pursuant to our authority under 37 C.F.R. 5 41.50(b).~ THE INVENTION The invention is directed to "methods, systems, and products for creating rules for the administration of end-user license agreements." Specification 1 : 13- 14. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A computer-implemented method for creating rules for the administration of end-user license agreements ('EULAs'), the method comprising: identifying, from historical license data, a license administration pattern, the license administration pattern representing a trend in an organization's administration of the EULAs, terms in the EULAs, or material subject to the EULAs; and creating in dependence upon the license administration pattern, a license administration rule, the license administration rule representing a conditional expression used to establish conditions for accepting or rejecting the EULAs. 2 Our decision will make reference to the Appellants' Appeal Brief ("Br.," filed Jul. 21, 2008) and the Examiner's Answer ("Answer," mailed Sep. 18, 2008). Appeal 2009-008220 Application 1 1/246,58 1 THE REJECTION The Examiner relies upon the following as evidence of unpatentability : Ginter US 5,910,987 Jun. 8, 1999 The following rejection is before us for review: 1. Claims 1-20 are rejected under 35 U.S.C. 5 102(b) as being anticipated by Ginter. ISSUES The Appellants argue that Ginter does not describe (1) "identifying, from historical license data, a license administration pattern, the license administration pattern representing a trend in an organization's administration of the EULAs, terms in the EULAs, or material subject to the EULAs" (claim 1) and (2) "creating in dependence upon the license administration pattern, a license administration rule, the license administration rule representing a conditional expression used to establish conditions for accepting or rejecting the EULAs" (claim 1). See Br. 5 and 7 respectively. The issue is whether Ginter describes expressly or inherently, claim limitations (1) and (2). FINDINGS OF FACT The Examiner relied on col. 24,ll. 1-24 and col. 233,ll. 21-38 as describing both claim limitations (1) and (2). Answer 3. Col. 24,ll. 1-24 of Ginter is reproduced below: preferred embodiment of the present invention, uniquely supports efficient maintenance of usage history for: (a) Appeal 2009-008220 Application 1 1/246,58 1 Col rental, (b) flat fee licensing or purchase, (c) licensing or purchase discounts based upon historical usage variables, and (d) reporting to users in a manner enabling users to determine whether a certain item was acquired, or acquired within a certain time period (without requiring the use of conventional database mechanisms, which are highly inefficient for these applications). Bitmap meter methods record activities associated with electronic appliances, properties, objects, or portions thereof, and/or administrative activities that are independent of specific properties, objects, etc., performed by a user and/or electronic appliance such that a content and/or appliance provider and/or controller of an administrative activity can determine whether a certain activity has occurred at some point, or during a certain period, in the past (for example, certain use of a commercial electronic content product and/or appliance). Such determinations can then be used as part of pricing and/or control strategies of a content and/or appliance provider, and/or controller of an administrative activity. For example, the content provider may choose to charge only once for access to a portion of a property, regardless of the number of times that portion of the property is accessed by a user. 233,ll. 21-38 of Ginter is reproduced below: other identifying information. It may also or alternatively provide or include one or more passwords or other information used to identify or otherwise verifylauthenticate an individual's identity, such as voice print and retinal scan information. For example, a portable appliance 2600 can be used as a smart card that carries various permissions and/or method information for authorizations and budgets. This information can be stored securely within portable appliance 2600 in a secure database 610 arrangement. When a user attempts to purchase or license an electronic product or otherwise use the "smart card" to authorize a process, portable appliance 2600 may query the user for identification information or may initiate an identification process employing scanned or otherwise entered information (such as user fingerprint, retinal or voice analysis or other techniques that may, for example, employ mapping and/or Appeal 2009-008220 Application 1 1/246,58 1 matching of provided characteristics to information securely stored within the portable appliance 2600). ANALYSIS We have reviewed col. 24,ll. 1-24 and col. 233,ll. 21-38 of Ginter (see supra) but do not find there any express or inherent description of the two claim limitations at issue. Col. 24,ll. 1-24 describes the use of bitmap meters to record usage of information to support efficient maintenance of usage history for licensing purposes which can then be used as part of a pricing strategy. Col. 233,ll. 21-38 describes ways of providing authenticating information when purchasing or licensing a product via, for example, a portable appliance. In neither disclosure is there any mention of end-use license agreements (EULAs) or a license administration pattern, let alone a license administration pattern representing a trend in an organization's administration of the EULAs, terms in the EULAs, or material subject to the EULAs. Consequently, we do not find that the Examiner has made out a prima facie case of anticipation for the claimed subject matter. NEW GROUNDS Process Claims 1-8 The law in the area of patent-eligible subject matter for process claims has recently been clarified by the Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218, No. 08-964,2010 WL 2555192 (U.S. June 28,2010). The Court held that the term "process" as used in 5 101, does not categorically exclude business methods. Id. at *9. Appeal 2009-008220 Application 1 1/246,58 1 The Court is unaware of any argument that the "ordinary, contemporary, common meaning," Diehr, supra, at 182, of "method" excludes business methods. Nor is it clear how far a prohibition on business patents would reach, and whether it would exclude technologies for conducting a business more efficiently. "At the same time, some business method patents raise special problems in terms of vagueness and suspect validity." Id. (citing eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 397 (2006)) (Kennedy, J., concurring). In searching for a limiting principle, this Court's precedents on the unpatentibility of abstract ideas provide useful tools. See infra 12- 15. Indeed, if the Court of Appeals were to succeed in defining a narrower category or class of patent applications that claim to instruct how business should be conducted, and then rule that the category is unpatentable because, for instance, it represents an attempt to patent abstract ideas, this conclusion might well be in accord with controlling precedent. Id. Claims 1-9 are drawn to business methods. Taking claim 1 as representative, the broadest reasonable construction of the claimed process in light of the Specification as it would be interpreted by one of ordinary skill in the art is that it provides a series of instructions that do no more than identify a license administration pattern based on historical license data and, based on the pattern, creating a rule representing a conditional expression for accepting or rejecting EULAs. The claim reasonably broadly covers creating any rule representing any conditional expression for accepting or rejecting EULAs which can be said to be based on a license administration pattern, random or not, based on historical license data. In effect, the claimed process vaguely explains a method for creating a rule representing a conditional Appeal 2009-008220 Application 1 1/246,58 1 expression for accepting or rejecting EULAs given certain information3 about a license administration pattern. Accordingly, as claimed, the process provides nothing more than vague instructions in how to conduct a business, principally how to create a rule representing a conditional expression for accepting or rejecting EULAs, given certain information about a license administration pattern. That is, the claimed process proposes following a simple formula for creating a rule representing a conditional expression for accepting or rejecting EULAs: identify a license administration pattern based on historical license data and, based on the pattern, create a rule. 3 The "type" of information the claimed process uses limit the claimed subject matter only in terms of the content of the information. They are properly characterized as nonfunctional descriptive material. In the context of prior art rejections, a distinction over the prior art based on nonfunctional descriptive material is patentably inconsequential. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) where, in the context of a prior art rejection, the court held that attaching instructions to an otherwise known product did not render the product patentable over the prior art. See also In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability) and Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (non-precedential) (Federal Circuit Appeal No. 2006- 1103; WL 2433879, affirmed without written opinion Aug. 19, 2006) (patentable weight need not be given to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate). We see no reason why recitations of nonfunctional descriptive material should not be similarly treated as inconsequential in the process of determining whether claimed subject matter is statutory under 35 U.S.C. 5 101. Appeal 2009-008220 Application 1 1/246,58 1 We now turn to the question of whether the claimed process subject matter is patent-eligible under 35 U.S.C. 5 101. Various factors must be considered and weighed when analyzing claims as a whole before reaching a conclusion on patent subject matter eligibility. The factors relevant in this case are the lack of an expressed recitation in the claims to a particular machine or transformation and that the claims are mere statements of a general concept. There is an implied recitation in the claims of a machine; that is, the phrase "computer-implemented" in the preamble of the claim implies that the claimed process is conducted in the computer field. "Generally, the preamble does not limit the claims." Allen Eng 'g Corp. v. Bartell Zndus., Znc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). It is arguable that the phrase "computer-implemented" in the preamble is "necessary to give life, meaning, and vitality" to the claim. See Pitney Bowes, Znc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). At best, it implies the use of a general purpose computer. Given that the body of the claim provides no further insight into the workings of the computer, the phrase "computer-implemented" suggests at best a nominal use of a general purpose computer. See Gottschalk v. Benson, US (1972): "The general purpose computer is designed to perform operations under many different programs." A nominal recitation of a general purpose computer is not an express recitation to a particular machine. Thus, we do not find that the claimed process is tied to a particular machine. Also, the phrase "computer-implemented" in the preamble implies operating the subsequently-recited steps in a "computer-implemented" environment, e.g., in the computer field. "Flook stands for the proposition Appeal 2009-008220 Application 1 1/246,58 1 that the prohibition against patenting abstract ideas 'cannot be circumvented by attempting to limit the use of the formula to a particular technological environment' or adding 'insignificant postsolution activity."' Bilski, 130 S. Ct. 3218, 3230 (quoting Diamond v. Diehr, 450 U.S. 175, 191-192 (1 98 1)). The phrase "computer-implemented," suggesting at best a nominal use of a general purpose computer, imposes no meaningful limits on the scope of the claim apart from describing a field in which to conduct the process. A field-of-use limitation is insufficient to render an otherwise patent-ineligible process patent-eligible. See Diehr, 450 U.S., 191 (1981). Cf. SiRF Technology, Znc. v. International Trade Commission, 601 F.3d 1319, 1333 (Fed. Cir. 2010) In order for the addition of machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations. There is also no recitation of a transformation, expressly or inherently. And, as we have reasonably broadly construed it, the subject matter of claim 1 is a series of instructions for identifying a license administration pattern based on historical license data and, based on the pattern, creating a rule. The vague instructions listed in the claim do no more than instruct how business should be conducted; that is, to create a rule based on identifying a license administration pattern based on historical license data. The claim covers any use of the concept of creating a rule based on identifying a license administration pattern based on historical license data, known and unknown. The instructions could be performed by any general purpose computer, existing or future-devised. In the words of Gottschalk v. Benson, Appeal 2009-008220 Application 1 1/246,58 1 409 U.S. 63,72 (1972), the claimed process "would wholly pre-empt the [creating of a rule representing a conditional expression for accepting or rejecting EULAs based on identifying a license administration pattern based on historical license data] and in practical effect would be a patent on the [concept] itself." For the foregoing reasons, based upon consideration of all of the relevant factors with respect to claims 1-9 as a whole, claims 1-9 are held to claim an abstract idea and are therefore rejected as ineligible subject matter under 35 U.S.C. 5 101. Accordingly, we will enter a new ground of rejection of claims 1-9 under 35 U.S.C. 5 101 because they claim an abstract idea. Apparatus Claims 9-1 3 It should be noted that, in challenging the rejection of the claims over the cited prior art under 5 103, the Appellants' brief does not separately address the apparatus claims 9-13. Given this, we presume the Appellants take the view that these claims should be treated the same as method claims 1-8. This would be a fair view because claim 9, for instance, includes the identical steps of claim 1; the only difference being that claim 9 is drawn to a system comprising a "computer memory operatively coupled to [a] computer processor" with instructions capable of conducting the steps of claim 1. A "memory" and a "processor" are standard components of a general purpose computer. The claim limitations to structure ("memory" and "processor" in claim 9) do no more to limit the claimed subject matter than the claim term "computerized" does to the process of claim 1. They are indicative of a field of use within which to manifest the abstract idea of creating of a rule representing a conditional expression for accepting or Appeal 2009-008220 Application 1 1/246,58 1 rejecting EULAs based on identifying a license administration pattern based on historical license data. Field-of-use limitations are insufficient to render otherwise patent-ineligible subject matter patent-eligible. See Diehr, 450 U.S. at 191. Accordingly, claims 9-13 are also rejected under 35 U.S.C. $ 101 as being directed to non-statutory subject matter for reciting abstract ideas. Article Claims 14-20 Article claims 14-20 are drawn to a "computer program product embodied on a computer-readable medium" comprising instructions for performing the abstract concept of creating a rule representing a conditional expression for accepting or rejecting EULAs based on identifying a license administration pattern based on historical license data (as set forth in claim 4 1). These claims encompass transitory propagating signals per se. We reach this reasonably broad construction because the Specification is silent as to the meaning of "computer program product embodied on a computer- readable medium" and dependent claim 16, for example, limits the computer-readable medium to a "transmission medium." A signal does not fit within at least one of the four statutory subject matter categories under 35 U.S.C. $101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Accordingly, claims 14-20 are rejected under 35 U.S.C. $ 101 as being directed to non-statutory subject matter for encompassing a signal. 4 See Subject Matter Eligibility of Computer Readable Media, 135 1 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). Appeal 2009-008220 Application 1 1/246,58 1 DECISION The decision of the Examiner to reject claims 1-20 under 35 U.S.C. 5 102(b) as being anticipated by Ginter is reversed. We enter a new ground of rejection of claims 1-20 under 35 U.S.C. g 101. Since we have entered a new rejection, our decision is not a final agency action. 37 C.F.R. 5 41.50(b) provides that, "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. 5 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of proceedings (37 C.F.R. 5 1 .I97 (b)) as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . (2) Request rehearing. Request that the proceeding be reheard under 37 C.F.R. 5 41.52 by the Board upon the same record . . . Appeal 2009-008220 Application 1 1/246,58 1 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R. 5 1.136(a)(l)(iv) (2007). REVERSED; 37 C.F.R. 6 41.50(b) mev INTERNATIONAL CORP (BLF) C/O BIGGERS & OHANIAN, LLP P.O. BOX 1469 AUSTIN TX 78767-1469 Copy with citationCopy as parenthetical citation